The individual plaintiffs perform professionally as The New Kids on the Block,
reputedly one of today's hottest musical acts. This case requires us to weigh
their rights in that name against the rights of others to use it in identifying the
New Kids as the subjects of public opinion polls.

Background

No longer are entertainers limited to their craft in marketing themselves to the
public. This is the age of the multi-media publicity blitzkrieg: Trading on their
popularity, many entertainers hawk posters, T-shirts, badges, coffee mugs and
the like--handsomely supplementing their incomes while boosting their public
images. The New Kids are no exception; the record in this case indicates there
are more than 500 products or services bearing the New Kids trademark. Among
these are services taking advantage of a recent development in telecommunications:
900 area code numbers, where the caller is charged a fee, a portion of which is
paid to the call recipient. Fans can call various New Kids 900 numbers to listen
to the New Kids talk about themselves, to listen to other fans talk about the New
Kids, or to leave messages for the New Kids and other fans.

The defendants, two newspapers of national circulation, conducted separate polls
of their readers seeking an answer to a pressing question: Which one of the New
Kids is the most popular? USA Today's announcement contained a picture of the
New Kids and asked, "Who's the best on the block?" The announcement listed a
900 number for voting, noted that "any USA Today profits from this phone line will
go to charity," and closed with the following: New Kids on the Block are pop's
hottest group. Which of the five is your fave? Or are they a turn off? ... Each call
costs 50 cents. Results in Friday's Life section. The Star's announcement, under
a picture of the New Kids, went to the heart of the matter: "Now which kid is the
sexiest?" The announcement, which appeared in the middle of a page containing
a story on a New Kids concert, also stated: Which of the New Kids on the Block
would you most like to move next door? STAR wants to know which cool New Kid
is the hottest with our readers. Readers were directed to a 900 number to register
their votes; each call cost 95 cents per minute.[1]

Fearing that the two newspapers were undermining their hegemony over their fans,
the New Kids filed a shotgun complaint in federal court raising no fewer than ten
claims: (1) common law trademark infringement; (2) Lanham Act false advertising;
(3) Lanham Act false designation of origin; (4) Lanham Act unfair competition;
(5) state trade name infringement; (6) state false advertising; (7) state unfair
competition; (8) commercial misappropriation; (9) common-law misappropriation;
and (10) intentional interference with prospective economic advantage. The two
papers raised the First Amendment as a defense, on the theory that the polls were
part and parcel of their "news- gathering activities." The district court granted
summary judgment for defendants. 745 F.Supp. 1540 (C.D.Cal.1990).

A. Since at least the middle ages, trademarks have served primarily to identify the
source of goods and services, "to facilitate the tracing of 'false' or defective wares
and the punishment of the offending craftsman." F. Schechter, The Historical
Foundations of the Law Relating to Trade-marks 47 (1925). The law has
protected trademarks since the early seventeenth century, and the primary
focus of trademark law has been misappropriation--the problem of one producer's
placing his rival's mark on his own goods. See, e.g., Southern v. How,
79 Eng.Rep. 1243 (K.B.1618). The law of trademark infringement was imported from
England into our legal system with its primary goal the prevention of unfair
competition through misappropriated marks. See, e.g., Taylor v. Carpenter,
23 F.Cas. 742 (C.C.D.Mass.1844) (Story, J.). Although an initial attempt at federal
regulation was declared unconstitutional, see the Trade-Mark Cases,
100 U.S. 82, 25 L.Ed. 550 (1879), trademarks have been covered by a
comprehensive federal statutory scheme since the passage of the Lanham Act in
1946. Throughout the development of trademark law, the purpose of trademarks
remained constant and limited: Identification of the manufacturer or sponsor of a
good or the provider of a service. [2] And the wrong protected against was
traditionally equally limited: Preventing producers from free-riding on their rivals'
marks. Justice Story outlined the classic scenario a century and a half ago when
he described a case of "unmitigated and designed infringement of the rights of the
plaintiffs, for the purpose of defrauding the public and taking from the plaintiffs the
fair earnings of their skill, labor and enterprise." Taylor, 23 F.Cas.
at 744. The core protection of the Lanham Act remains faithful to this conception.
See 15 U.S.C. s 1114 (prohibiting unauthorized use in commerce of registered
marks). Indeed, this area of the law is generally referred to as "unfair competition"
--unfair because, by using a rival's mark, the infringer capitalizes on the investment
of time, money and resources of his competitor; unfair also because, by doing so,
he obtains the consumer's hard-earned dollar through something akin to fraud. See
Paul Heald, Federal Intellectual Property Law and the Economics of
Preemption, 76 Iowa L.Rev. 959, 1002-03 (1991).

A trademark is a limited property right in a particular word, phrase or symbol. [3]
And although English is a language rich in imagery, we need not belabor the point
that some words, phrases or symbols better convey their intended meanings than
others. See San Francisco Arts & Athletics, Inc. v. U.S.O.C., 483
U.S. 522, 569, 107 S.Ct. 2971, 2998, 97 L.Ed.2d 427 (1987) (Brennan, J.,
dissenting) ("[A] jacket reading 'I Strongly Resent the Draft' would not have conveyed
Cohen's message."). Indeed, the primary cost of recognizing property rights in
trademarks is the removal of words from (or perhaps non-entrance into) our language.
Thus, the holder of a trademark will be denied protection if it is (or becomes) generic,
i.e., if it does not relate exclusively to the trademark owner's product. See, e.g.,
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83
L.Ed. 73 (1938) ("shredded wheat"); Eastern Air Lines, Inc. v. New York Air
Lines, Inc., 559 F.Supp. 1270 (S.D.N.Y.1983) ("air-shuttle" to describe
hourly plane service). This requirement allays fears that producers will deplete the
stock of useful words by asserting exclusive rights in them. [4] When a trademark
comes to describe a class of goods rather than an individual product, the courts
will hold as a matter of law that use of that mark does not imply sponsorship or
endorsement of the product by the original holder.

A related problem arises when a trademark also describes a person, a place or an
attribute of a product. If the trademark holder were allowed exclusive rights in such
use, the language would be depleted in much the same way as if generic words
were protectable. Thus trademark law recognizes a defense where the mark is
used only "to describe the goods or services of [a] party, or their geographic origin."
15 U.S.C. s 1115(b)(4). "The 'fair- use' defense, in essence, forbids a trademark
registrant to appropriate a descriptive term for his exclusive use and so prevent
others from accurately describing a characteristic of their goods." Soweco,
Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir.1980). Once again, the
courts will hold as a matter of law that the original producer does not sponsor or
endorse another product that uses his mark in a descriptive manner. See, e.g.,
Schmid Laboratories v. Youngs Drug Products Corp., 482 F.Supp.
14 (D.N.J.1979) ("ribbed" condoms).

With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there
are equally informative non-trademark words describing the products (gelatin,
cellophane tape and facial tissue). But sometimes there is no descriptive substitute,
and a problem closely related to genericity and descriptiveness is presented when
many goods and services are effectively identifiable only by their trademarks. For
example, one might refer to "the two-time world champions" or "the professional
basketball team from Chicago," but it's far simpler (and more likely to be understood)
to refer to the Chicago Bulls. In such cases, use of the trademark does not imply
sponsorship or endorsement of the product because the mark is used only to
describe the thing, rather than to identify its source.

Indeed, it is often virtually impossible to refer to a particular product for purposes
of comparison, criticism, point of reference or any other such purpose without
using the mark. For example, reference to a large automobile manufacturer based
in Michigan would not differentiate among the Big Three; reference to a large
Japanese manufacturer of home electronics would narrow the field to a dozen or
more companies. Much useful social and commercial discourse would be all but
impossible if speakers were under threat of an infringement lawsuit every time
they made reference to a person, company or product by using its trademark.

A good example of this is Volkswagenwerk Aktiengesellschaft v. Church,
411 F.2d 350 (9th Cir.1969), where we held that Volkswagen could not prevent an
automobile repair shop from using its mark. We recognized that in "advertising [the
repair of Volkswagens, it] would be difficult, if not impossible, for [Church] to avoid
altogether the use of the word 'Volkswagen' or its abbreviation 'VW,' which are the
normal terms which, to the public at large, signify appellant's cars." Id. at 352.
Church did not suggest to customers that he was part of the Volkswagen
organization or that his repair shop was sponsored or authorized by VW; he merely
used the words "Volkswagen" and "VW" to convey information about the types of
cars he repaired. Therefore, his use of the Volkswagen trademark was not an
infringing use.

The First Circuit confronted a similar problem when the holder of the trademark
"Boston Marathon" tried to stop a television station from using the name: [T]he
words "Boston Marathon" ... do more than call attention to Channel 5's program;
they also describe the event that Channel 5 will broadcast. Common sense
suggests (consistent with the record here) that a viewer who sees those words flash
upon the screen will believe simply that Channel 5 will show, or is showing, or has
shown, the marathon, not that Channel 5 has some special approval from the
[trademark holder] to do so. In technical trademark jargon, the use of words for
descriptive purposes is called a "fair use," and the law usually permits it even if the
words themselves also constitute a trademark. WCVB-TV v. Boston Athletic
Ass'n, 926 F.2d 42, 46 (1st Cir.1991). Similarly, competitors may use a
rival's trademark in advertising and other channels of communication if the use is
not false or misleading. See, e.g., Smith v. Chanel, Inc., 402 F.2d
562 (9th Cir.1968) (maker of imitation perfume may use original's trademark in
promoting product). [5]

Cases like these are best understood as involving a non-trademark use of a mark
--a use to which the infringement laws simply do not apply, just as videotaping
television shows for private home use does not implicate the copyright holder's
exclusive right to reproduction. See Sony Corp. v. Universal City Studios, Inc.,
464 U.S. 417, 447-51, 104 S.Ct. 774, 791-93, 78 L.Ed.2d 574 (1984). [6] Indeed,
we may generalize a class of cases where the use of the trademark does not
attempt to capitalize on consumer confusion or to appropriate the cachet of one
product for a different one. Such nominative use of a mark--where the only word
reasonably available to describe a particular thing is pressed into service--lies
outside the strictures of trademark law: Because it does not implicate the source-
identification function that is the purpose of trademark, it does not constitute unfair
competition; such use is fair because it does not imply sponsorship or endorsement
by the trademark holder. "When the mark is used in a way that does not deceive
the public we see no such sanctity in the word as to prevent its being used to tell
the truth." Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct.
350, 351, 68 L.Ed. 731 (1924) (Holmes, J.).

To be sure, this is not the classic fair use case where the defendant has used the
plaintiff's mark to describe the defendant's own product. Here, the New Kids
trademark is used to refer to the New Kids themselves. We therefore do not purport
to alter the test applicable in the paradigmatic fair use case. If the defendant's use
of the plaintiff's trademark refers to something other than the plaintiff's product, the
traditional fair use inquiry will continue to govern. But, where the defendant uses a
trademark to describe the plaintiff's product, rather than its own, we hold that a
commercial user is entitled to a nominative fair use defense provided he meets the
following three requirements: First, the product or service in question must be one
not readily identifiable without use of the trademark; second, only so much of the
mark or marks may be used as is reasonably necessary to identify the product or
service; [7] and third, the user must do nothing that would, in conjunction with the
mark, suggest sponsorship or endorsement by the trademark holder.

B. The New Kids do not claim there was anything false or misleading about the
newspapers' use of their mark. Rather, the first seven causes of action, while
purporting to state different claims, all hinge on one key factual allegation: that the
newspapers' use of the New Kids name in conducting the unauthorized polls
somehow implied that the New Kids were sponsoring the polls. [8] It is no more
reasonably possible, however, to refer to the New Kids as an entity than it is to
refer to the Chicago Bulls, Volkswagens or the Boston Marathon without using the
trademark. Indeed, how could someone not conversant with the proper names of
the individual New Kids talk about the group at all? While plaintiffs' trademark
certainly deserves protection against copycats and those who falsely claim that
the New Kids have endorsed or sponsored them, such protection does not extend
to rendering newspaper articles, conversations, polls and comparative advertising
impossible. The first nominative use requirement is therefore met.

Also met are the second and third requirements. Both The Star and USA Today
reference the New Kids only to the extent necessary to identify them as the
subject of the polls; they do not use the New Kids' distinctive logo or anything else
that isn't needed to make the announcements intelligible to readers. Finally,
nothing in the announcements suggests joint sponsorship or endorsement by the
New Kids. The USA Today announcement implies quite the contrary by asking
whether the New Kids might be "a turn off." The Star's poll is more effusive but
says nothing that expressly or by fair implication connotes endorsement or joint
sponsorship on the part of the New Kids.

The New Kids argue that, even if the newspapers are entitled to a nominative fair
use defense for the announcements, they are not entitled to it for the polls
themselves, which were money-making enterprises separate and apart from the
newspapers' reporting businesses. According to plaintiffs, defendants could have
minimized the intrusion into their rights by using an 800 number or asking
readers to call in on normal telephone lines which would not have resulted in a
profit to the newspapers based on the conduct of the polls themselves.

The New Kids see this as a crucial difference, distinguishing this case from
Volkswagenwerk, WCBV-TV and other nominative use cases. The New Kids'
argument in support of this distinction is not entirely implausible: They point out
that their fans, like everyone else, have limited resources. Thus a dollar spent
calling the newspapers' 900 lines to express loyalty to the New Kids may well
be a dollar not spent on New Kids products and services, including the New Kids'
own 900 numbers. In short, plaintiffs argue that a nominative fair use defense is
inapplicable where the use in question competes directly with that of the
trademark holder.

We reject this argument. While the New Kids have a limited property right in their
name, that right does not entitle them to control their fans' use of their own money.
Where, as here, the use does not imply sponsorship or endorsement, the fact that
it is carried on for profit and in competition with the trademark holder's business is
beside the point. See, e.g., Universal City Studios, Inc. v. Ideal Publishing
Corp., 195 U.S.P.Q. 761 (S.D.N.Y.1977) (magazine's use of TV program's
trademark "Hardy Boys" in connection with photographs of show's stars not
infringing). Voting for their favorite New Kid may be, as plaintiffs point out, a way
for fans to articulate their loyalty to the group, and this may diminish the resources
available for products and services they sponsor. But the trademark laws do not
give the New Kids the right to channel their fans' enthusiasm (and dollars) only into
items licensed or authorized by them. See International Order of Job's
Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1990) (no infringement
where unauthorized jewelry maker produced rings and pins bearing fraternal
organization's trademark). The New Kids could not use the trademark laws to
prevent the publication of an unauthorized group biography or to censor all
parodies or satires which use their name. [9] We fail to see a material difference
between these examples and the use here.

Summary judgment was proper as to the first seven causes of action because
they all hinge on a theory of implied endorsement; there was none here as the
uses in question were purely nominative.

II

The New Kids raise three additional claims that merit brief attention.

A. The New Kids claim that USA Today's and The Star's use of their name
amounted to both commercial and common law misappropriation under California
law. Although there are subtle differences between these two causes of action, all
that's material here is a key similarity between them: The papers have a complete
defense to both claims if they used the New Kids name "in connection with any
news, public affairs, or sports broadcast or account" which was true in all material
respects. See Cal.Civ.Code s 3344(d); Eastwood v. Superior
Ct., 149 Cal.App.3d 409, 421 & 426, 198 Cal.Rptr. 342 (1983) (extending
the section 3344(d) defense to common law misappropriation claims); see also
Leidholdt v. L.F.P. Inc., 860 F.2d 890, 895 (9th Cir.1988), cert.
denied, 489 U.S. 1080, 109 S.Ct. 1532, 103 L.Ed.2d 837 (1989); Maheu v.
CBS, Inc., 201 Cal.App.3d 662, 676-77, 247 Cal.Rptr. 304 (1988). [10]

In this case, USA Today's and The Star's use of the New Kids' name was "in
connection with" news accounts: The Star ran concurrent articles on the New Kids
along with its 900-number poll, while USA Today promised a subsequent story on
the popularity of various members of the singing group. Both papers also have an
established track record of polling their readers and then reporting the poll results
as part of a later news story. The New Kids' misappropriation claims are barred by
California Civil Code section 3344(d).

B. The New Kids' remaining claim is for intentional interference with prospective
economic advantage, but they ignore the maxim that all's fair in love, war and the
free market. Plaintiffs' case rests on the assumption that the polls operated to
siphon off the New Kids' fans or divert their resources away from "official" New Kids
products. Even were we to accept this premise, no tort claim has been made out:
"So long as the plaintiff's contractual relations are merely contemplated or potential,
it is considered to be in the interest of the public that any competitor should be free
to divert them to himself by all fair and reasonable means.... In short, it is no tort to
beat a business rival to prospective customers." A-Mark Coin Co. v. General
Mills, Inc., 148 Cal.App.3d 312, 323, 195 Cal.Rptr. 859 (1983); see B.
Witkin, 5 Summary of California Law s 669 at 766 (1988) ("one competitor may
induce customers of the other to do business with him"). Because we have already
determined that the newspapers' use of the mark was "fair and reasonable," the
New Kids do not have a tort claim based on the fact that they may have lost some
business to a competitor.

Conclusion

The district court's judgment is
AFFIRMED.

Footnotes
1. The USA Today poll generated less than $300 in revenues, all of which the newspaper donated
to the Berklee College of Music. The Star's poll generated about $1600.

2. In economic terms, trademarks reduce consumer search costs by informing people that
trademarked products come from the same source. The benefit of the brand name is analogous to
that of designating individuals by last as well as first names, so that, instead of having to say "the
Geoffrey who teaches constitutional law at the University of Chicago Law School--not the one who
teaches corporations," you can say "Geoffrey Stone, not Geoffrey Miller." William M. Landes and
Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & Econ. 265, 269 (1987).

3. Trademark protection, like other legal protections of property rights, guards against the overuse
of resources while also providing incentives for the creation of new combinations of resources. See
G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896, 900 (9th Cir.1992).

4. It's far more convenient, for example, to ask your local pharmacist for "aspirin"
--once a trademark --than to remember or pronounce "salicylic acid." An interesting
question is whether a word, although once generic, may become protectable. For
example, the word "Jeep," which originally meant a general purpose military vehicle
and, later, any rugged sport- utility vehicle, is now being used as a trademark by
Chrysler. Cf. Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (2d Cir.1917)
(protecting plaintiff's use of the trademark "Crescent," which originally described
a certain kind of wrench).

5. A trademark may even be used lawfully in a way that many people, including the
trademark owner, may find offensive. Consider Girl Scouts v. Personality Posters
Mfg. Co., 304 F.Supp. 1228 (S.D.N.Y.1969): Defendants published a poster showing
"a smiling girl dressed in the well-known green uniform of the Junior Girl Scouts,
with her hands clasped above her protruding, clearly pregnant abdomen. The caveat
'BE PREPARED' appears next to her hands." Id. at 1230. The court found no
infringement: "[R]ational analysis of the situation does not indicate a likelihood that
the public will believe that the Girl Scouts are the authors of the poster to which they understandably
take such violent exception." Id. at 1231.

6. The common law has recognized a fair use defense to claims of copyright
infringement involving relatively harmless violations for centuries. See Gyles v.
Wilcox, 26 Eng.Rep. 489, 490 (Ch. 1740); William F. Patry, The Fair Use Privilege
in Copyright Law 6-17 (1985). While fair use has been part of American copyright
law for over a century and a half, see Folsom v. Marsh, 9 F.Cas. 342, 344-49
(C.C.D.Mass.1841) (Story, J.), and Gray v. Russell, 10 F.Cas. 1035, 1038-39
(C.C.D.Mass.1839) (Story, J.), the doctrine was only codified in the 1976 revision
of the copyright laws. Pub.L. No. 94-553, 90 Stat. 2546 (1976); see 17 U.S.C.
s 107. Sound policies underlie the fair use defense. The copyright holder has a
property interest in preventing others from reaping the fruits of his labor, not in
preventing the authors and thinkers of the future from making use of, or building upon,
his advances. The process of creation is often an incremental one, and advances
building on past developments are far more common than radical new concepts.
See Lewis Galoob Toys, Inc. v. Nintendo, Inc., 964 F.2d 965 (9th Cir.1992). Where
the infringement is small in relation to the new work created, the fair user is profiting
largely from his own creative efforts rather than free-riding on another's work. A
prohibition on all copying whatsoever would stifle the free flow of ideas without
serving any legitimate interest of the copyright holder.

7. Thus, a soft drink competitor would be entitled to compare its product to Coca-Cola
or Coke, but would not be entitled to use Coca-Cola's distinctive lettering. See
Volkswagenwerk, 411 F.2d at 352 ("Church did not use Volkswagen's distinctive
lettering style or color scheme, nor did he display the encircled 'VW' emblem"); cf.
Walt Disney Productions v. Air Pirates, 581 F.2d 751, 758 (9th Cir.1978) (taking
"more than was necessary" can defeat copyright fair use defense).

8. The New Kids effectively concede as much. See Opening Brief at 17 n. 11
("plaintiffs showed a genuine issue of material fact as to whether defendants' use
of the New Kids' name and likeness was likely to cause confusion regarding [the]
existence of such an 'implied endorsement' "); Reply Brief at 14 (same).

9. Consider, for example, a cartoon which appeared in a recent edition of a humor
magazine: The top panel depicts a man in medieval garb hanging a poster
announcing a performance of "The New Kids on the Block" to an excited group of
onlookers. The lower panel shows the five New Kids, drawn in caricature, hands tied
behind their backs, kneeling before "The Chopping Block" awaiting execution.
Cracked # 17 (inside back cover) (Aug.1992). Cruel? No doubt--but easily within the
realm of satire and parody. See note 5, supra.

10. Contrary to the New Kids' assertion, see 745 F.Supp. at 1546 n. 8, the section
3344(d) defense is not coextensive with the First Amendment. Rather, it is designed
to avoid First Amendment questions in the area of misappropriation by providing
extra breathing space for the use of a person's name in connection with matters of
public interest. See Eastwood, 149 Cal.App.3d at 421, 198 Cal.Rptr. 342.